Forming a Monetization Strategy – Assessments re: Validity Strength (Part 4(iii)(b) of 6)

Creating an effective monetization strategy requires a multi-dimensional game plan, a game plan involving (1) acquisition considerations; (2) campaign costs; (3) revenue potential, taking into account the (i) market landscape and (ii) importance of the read; (4) assessments regarding the (i) strength of the read; (ii) claim construction positions; (iii) validity, including (a) forum considerations and (b) strength assessments; (5) filing strategies; and (6) compelling story telling.

In this post, I’ll be discussing (4)(iii)(b) assessments regarding validity, strength.

Notwithstanding the forum considerations noted in the previous post, access your validity position using the reasonable-persons test—this will orient you in the face of uncertainty regarding forum variability and the respective standards of review.

Assess your validity strength at least two points: (1) prior to filing suit and (2) after prior art surfaces (e.g., after the defendants serve you with invalidity contentions).

Prior to Filing Suit

There are divided camps regarding whether or not to conduct prior art searches prior to filing suit—I’ll discuss the pros and cons of each in another post.

Assuming you do not have any problematic prior-art references on hand, ask yourself the following:

1. What’s the timeline and evolution of the technology-at-issue, and where does your priority date fall within that timeline?

Consult with an industry expert who has firsthand knowledge of the industry and can pinpoint where your priority date falls within the industry’s development.  Obviously, you’ll want your priority date to predate the point at which the industry adopted the infringing technology, preferably by at least 5 years. 

2. Is there an argument your claims cover products and systems that predate your priority date?

If so, the patent office issued overly broad claims.  You’ll need to find support for more limiting constructions that avoid reading on prior art systems and services.

3. For a potential licensee, when did it start selling the infringing product or service?

If the potential licensee sold versions of the infringing product or services before your priority date, you’ll need to find distinctions between the previous versions and versions sold after your priority date.  If you can’t find a meaningful distinction that directly relates to your patent claims, your validity position is weak.

After Prior Art Surfaces

After you receive prior art, you’ll need to thoroughly analyze whether the prior art actually invalidates your claims, i.e., whether the prior art teaches each and every element of your claims. 

There is no shortcut to this process—to find the holes, it’ll take hard work, attention to detail, and creativity.    

Remember–prior art will be an issue in every campaign.  You’ll need to overcome the prior art attacks in each and every one of your campaigns.

When you receive prior art, ask yourself the following:

1. Have you been served with invalidity charts?

Never rely on a defendant’s charts—it’s too easy obscure bad facts in a chart.  Analyze each reference and come to your own conclusions. 

2. Did the defendants submit an expert declaration to support its invalidity arguments?

If so, you’ll need to line up your expert, to contest what the other expert’s interpretation of the references and the motivation to combine them.  Never let a defendant expert declaration go unchallenged.

3. Are the references really prior art?

In some instances, defendants submit references that are not, legally, prior art.  I’ll discuss how to determine this in another post. 

4. Did any of the prior art references contemplate and solve your patent’s identified problem and proposed solution?

If so, the defendants are equipped with a story that others in the field already considered the same problem and addressed it—this will significantly undermine your validity position.

5. If the problem was previously identified, does your patent solve the problem in a way that others did not consider?

If so, then you have an argument that your inventor(s) found a unique solution to the problem, and that this is the solution adopted by the market—this will significantly bolster your story for validity.

6. For each defendant attempt to show that a reference(s) discloses your claims, how coherent is the defendant’s story?

Did the defendant need to stretch any definition, word, or teaching in a prior art reference, to make it fit your claims?  Conversely, did the defendant stretch any definition or teaching of your claim terms, to support its own arguments?

Find these holes and expose them—you can crack the defendant’s invalidity position here. 

7. Did the defendants need to combine references (103 references) to disclose every element of your claims?

If the defendant needed to combine references, then it did not find a single reference (102 reference) that discloses every element of your claim—this is a very good sign. 

There are number of holes from which to attack 103 references—I’ll discuss this in another post.

8. Did the defendant find a single reference that discloses each and every element of your claims?

These are 102 references–these are the dangerous ones.  You’ll need to find arguments overcome these references or your campaign will crumble.

Look at 102 references from a bird’s eye view and in depth.  From a bird’s eye view, can you distinguish the purpose of the 102 reference’s teachings from your patented invention?  If so, formulate a theme regarding overall purpose of your patented invention, to distinguish the 102 reference’s teachings.

Looking in depth, repeat the process described in (6) above.  Are there any constructions you can import into your claims to distinguish it from the prior art reference? 

You’ll need to find the particular constructions that overcome the prior art, yet maintain the integrity of your infringement read.  I’ll be discussing this process in more detail in another post. 


Leave a reply

Your email address will not be published. Required fields are marked *


You may use these HTML tags and attributes: <a href="" title=""> <abbr title=""> <acronym title=""> <b> <blockquote cite=""> <cite> <code> <del datetime=""> <em> <i> <q cite=""> <s> <strike> <strong>